25 November 2010

Headnote
CSL failed "promptly" to consider whether or not amendments to its Australian patent should be made in response to amendments recommended in respect of corresponding foreign patent applications. CSL was "squarely on notice" that a claim was "problematic". The absence of evidence of professional advice to the contrary prior to launching legal proceedings was key to the refusal to permit CSL to amend that claim.

From at least 2001, CSL was aware that certain documents were regarded as problematic to the novelty of their invention.

The view that those documents were problematic came from a number of examining jurisdictions.

There was no evidence of professional advice contrary to the opinions expressed by the various examiners.

CSL sought amendments in the foreign jurisdictions but not in Australia.

The refused amendments were sought after proceedings had been launched.

Findings

When a patentee is exposed to the view that prior art may be fatal to the validity of claims, the onus shifts to the patentee to provide a reasonable explanation of why inaction was preferred to amendment.

It is too categorical to restrict the circumstances in which amendment is refused to those in which the patentee knew the unamended patent was invalid.

The lack of evidence of professional advice (supra) counted heavily against CSL.

It was not a satisfactory response to assert that CSL did not need to take the initiative because the patent stood on the register.

It was not in the public interest that "serious and apparently legitimate issues" had been raised elsewhere not be confronted in the Australian text.

Lessons

Leaving aside public interest, it is in the client's best interest that the very instrument that is to form the basis of a legal proceeding be reviewed and amended if necessary. Failure to do so is simply bad practice.

It is to be noted that it was more important to the court that there was a coherent reason for failing to amend than not actually amending.

Multi-jurisdictional patent portfolios should be reviewed from time to time. Setting a 6-month status check on matters is common practice where firms have large case loads per practitioner. Part of that 6-month status check could be the consideration and proposal of amendments to clients.

16 November 2010

In this case, a patent for a sustained release formulation of Effexor was found valid and infringed. While a number of different aspects were covered, I found the discussions concerning inventive step most useful. I have distilled some points and lessons. The cross examinations of the witnesses are worth reading.

Inventive step notes:

Detailed laboratory notebooks can be used to establish a finding of inventive step.

Reference to a result can define a claim. The question is what the skilled addressee would have understood at the priority date by the reference to the result.

A finding that experiments performed are of a routine character that would be tried as a matter of course by the skilled addressee would support a holding of obviousness.

A witness's use of hindsight undermines an allegation of inventive step.

A witness's knowledge that an invention has been successful indicates the use of hindsight.

A witness's reference to publications not available at the priority date indicates the use of hindsight.

Knowledge of the existence of a patent dispute can cast doubt on the reliability of a witness's evidence.

The problem and solution approach could be unfair to an inventor of a combination or a simple solution.

Inventive step may be lacking if the available information at the priority date would support the existence of a motivation to prepare a formulation in question.

Lessons

Not only R&D teams, but all inventors should keep a careful developmental record in a form that can be readily reproduced.

Where possible, witnesses should not be made aware of the patent dispute or even of the existence of a patent.

Witnesses must be made to understand the importance of preparing their material as at the priority date, otherwise stated.

04 November 2010

This court considered the question of whether or not "a device" has one or two parts. It emphasised the need to consider such questions in the context of the specification as a whole. The issue of "fair basis" was also considered. Fair basis must not be confused with any of the other requirements of s40 from which it is conceptually distinct. The fair basis test does not involve isolating an integer and then looking for its equivalent within the specification.

03 November 2010

I've just received an update from IP Australia that full text searching will initially be launched in a beta environment by the end of 2010. This will allow text searching of publicly available patent specifications back to 1904.

This initial release will include about half of the full collection. It is planned that the full collection will be available by the end of March 2011.

This is good news for practitioners down under. It particularly improves the ability to carry out patent infringement searches, which have always been tricky here.